Sweats Fashions, Inc. v. Pannill Knitting Co., Inc., No. 87-1229

• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
• Writing for the Court: Before FRIEDMAN, Circuit Judge, MILLER, Senior Circuit Judge, and NIES; NIES
• Citation: 4 USPQ2d 1793,833 F.2d 1560
• Docket Number: No. 87-1229
• Decision Date: 13 November 1987
• Parties: SWEATS FASHIONS, INC., Appellant, v. PANNILL KNITTING COMPANY, INC., Appellee.

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833 F.2d 1560 4 U.S.P.Q.2d 1793 SWEATS FASHIONS, INC., Appellant,
v.
PANNILL KNITTING COMPANY, INC., Appellee. No. 87-1229. United States Court of Appeals,
Federal Circuit. Nov. 13, 1987.

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Simor L. Moskowitz, Fleit, Jacobson, Cohn & Price, Washington, D.C., argued for appellant. With him on the brief were Barbara A. Sundberg and Marsha G. Gentner.

John W. Burke, III, McGuire, Woods, Battle & Boothe, Richmond, Va., argued for appellee. With him on the brief was Elizabeth F. Edwards.

Before FRIEDMAN, Circuit Judge, MILLER, Senior Circuit Judge, and NIES, Circuit Judge.

NIES, Circuit Judge.

Sweats Fashions, Inc. (Fashions), appeals from the decision of the United States Patent and Trademark Office (PTO) Trademark Trial and Appeal Board, in Opposition No. 69,983 (May 9, 1986), which granted summary judgment in favor of Pannill Knitting Company, Inc., and dismissed the opposition. Fashions opposes the registration by Pannill of the mark ULTRA SWEATS (Serial No. 430,012) for sweatshirts and sweatpants (SWEATS disclaimed) alleging likelihood of confusion based on its prior use and registration of marks incorporating the word "sweats" and also fraud in Pannill's prosecution of the subject application. We affirm.

I

Fashions is the prior user and registrant of the following mark (Reg. No. 1,235,727), for a variety of active sportswear, the term "SWEATS" being disclaimed therein:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

In addition, Fashions owns Reg. No. 1,162,854 for SWEATS/BI/EBE and design for active sportswear and SWEATS and design as displayed above for swim suits and shoes, the latter without a disclaimer. It alleges use of these marks since September 5, 1979. In 1983, Pannill applied to register ULTRA SWEATS for sweatshirts and sweatpants, asserting first use in that year. Pannill admits it knew of Fashions' marks and registrations before filing its application as a result of some business contacts between them as well as from an attorney's trademark search report.

Initially, the Examiner rejected Pannill's application under section 2(d) of the Lanham Act, 15 U.S.C. Sec. 1052(d) (1982), on the basis of the two Fashions' registrations covering goods identical to Pannill's (Nos. 1,235,727 and 1,162,854). Pannill responded by entering a disclaimer of exclusive right to use the word "sweats" apart from its mark; pointed out that the term was descriptive of its goods as shown by several third-party marks, including the prior mark SUPER SWEATS for sweatsuits, Reg. No. 1,158,184; argued that Fashions' marks were dominated by the design features, not the disclaimed term "sweats"; and urged that there is no likelihood of

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confusion between the respective marks because the only common feature is descriptive. The Examiner then withdrew the rejection, and Pannill's mark was published for opposition.

Fashions opposed Pannill's application on three grounds: one count of likelihood of confusion and two counts of alleged "fraud on the Patent and Trademark Office." After some discovery, Pannill filed a motion for summary judgment on all three counts. It supported its motion with an affidavit of an officer of its company with exhibits attached showing extensive use of "sweats" as the name for sweatshirts and sweatpants; additional third-party registrations, with disclaimers of "sweats," all for sportswear; an affidavit of the attorney who prosecuted the application explaining his error during prosecution in misidentifying certain asserted third-party registrations; and an affidavit by its officer affirming his belief in the company's exclusive rights in ULTRA SWEATS. Fashions opposed the motion on the grounds that factual issues had to be resolved and that there was a likelihood of confusion with its marks. The board granted summary judgment, holding that there was no genuine issue created on the record with respect to any material fact on any count and that Pannill was entitled to judgment as a matter of law. Fashions' petition to file notice of appeal one day late was initially denied, 231 USPQ 560 (Dec. Comm'r Pat.1986), but was then allowed on reconsideration, 2 USPQ2d 1380 (Dec. Comm'r Pat.1987).

II

In contrast to implications drawn from earlier Supreme Court decisions, summary judgment may no longer be regarded as a disfavored procedural shortcut. Rather, the Court has counseled that summary judgment is a salutary method of disposition "designed 'to secure the just, speedy and inexpensive determination of every action.' " Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 2555, 91 L.Ed.2d 265 (1986); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).

Fed.R.Civ.P. 56, made applicable to proceedings before the board by 37 C.F.R. Sec. 2.116(a) (1987), provides in pertinent part:

(c) ... The judgment sought [on a motion for summary judgment] shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law....

....

(e) .... When a motion for summary judgment is made and supported as provided in this rule, an adverse party may not rest upon the mere allegations or denials of the adverse party's pleading, but the adverse party's response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial. If the adverse party does not so respond, summary judgment, if appropriate, shall be entered against the adverse party.

Where a movant has supported its motion with affidavits or other evidence which, unopposed, would establish its right to judgment, the non-movant may not rest upon general denials in its pleadings or otherwise, but must proffer countering evidence sufficient to create a genuine factual dispute. A dispute is genuine only if, on the entirety of the record, a reasonable jury could resolve a factual matter in favor of the non-movant. Anderson, 106 S.Ct. at 2510. This court has delineated the non-moving party's duty in this respect, as follows:

In countering a motion for summary judgment, more is required than mere assertions of counsel. The non-movant may not rest on its conclusory pleadings but, under Rule 56, must set out, usually in an affidavit by one with knowledge of specific facts, what specific evidence

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could be offered at trial. Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 836, 221 USPQ 561, 564 (Fed.Cir.1984).

Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 626-27, 222 USPQ 741, 743 (Fed.Cir.1984). Moreover, the Celotex opinion, after advising that the burden is not on the movant to produce evidence showing the absence of a genuine issue of material fact, states:

Instead, as we have explained, the burden on the moving party may be discharged by "showing"--that is, pointing out to the District Court--that there is an absence of evidence to support the nonmoving party's case.

Celotex, 106 S.Ct. at 2554 (emphasis added).

III LIKELIHOOD OF CONFUSION A

On the issue of likelihood of confusion, the board's analysis was as follows:

While the goods of the parties must, for our purposes, be considered identical, the word SWEATS in the relevant registrations of opposer and in the application has been disclaimed. These disclaimers are tantamount to admissions that neither party has the exclusive right to use this descriptive term.

In support of its position that confusion is not likely, applicant has submitted the affidavit of its vice president, stating that upon his knowledge and experience with the fleece garment industry, the word "sweats" is a term used by consumers as well as by members of trade of which he is a part to refer to or describe fleece garments for sportswear including sweatpants and sweatshirts. Applicant's vice president has also attested that certain copies of pages from trade magazines and other materials are true and accurate. These materials demonstrate that the word "sweats" is a generic term used in the trade to refer to sweatpants or sweatshirts. The following examples are illustrative:

ALPHA SHIRT CO.

Our 48th year distributing basic imprintable sportswear. In-depth inventory of tees, sweats, hoods, staff shirts, interlock caps, warm-up jackets in all weights ...

* * *

* * *

JRT helps keep you fit with sweats

These are the sweats to get!

* * *

* * *

Introducing Nazareth "Sweats" for Kids ... Big people aren't the only ones wearing sweats these days ... Discover the potential of the children's market with Nazareth sweats for kids ...

* * *

* * *

NEW! OVER-SIZE FASHION "SWEATS"

The Latest and Hottest Over-Sized Dolman Sleeved Sweats in the Latest 7 Colors ... PLUS We've added Hanes Fleece Sweats.

* * *

* * *

YOUTH & ADULT SWEATS SPORTSWEAR BY RUSSEL

* * *

* * *

SUMMER SPECIALS Ts ... Caps ... Sweats

Our best quantity prices on sweats from as low as ...

* * *

* * *

In addition, applicant has submitted copies of third-party registrations for marks including the word SWEATS, wherein that word has been disclaimed...